Trials@uspto.gov
`571-272-7822
`
`Paper 44
`Date: May 5, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner.
`
`IPR2022-00118
`Patent 10,804,740 B2
`
`
`
`
`
`
`
`
`
`Before JAMESON LEE, KARL D. EASTHOM, and
`BRIAN J. McNAMARA, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`Dismissing Patent Owner’s Motion to Amend
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 44
`Date: May 5, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner.
`
`IPR2022-00118
`Patent 10,804,740 B2
`
`
`
`
`
`
`
`
`
`Before JAMESON LEE, KARL D. EASTHOM, and
`BRIAN J. McNAMARA, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`Dismissing Patent Owner’s Motion to Amend
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`
`IPR2022-00118
`Patent 10,804,740 B2
`
`I. BACKGROUND
`
`On May 12, 2022, in response to a Petition (Paper 2, “Pet.”) we
`
`instituted an inter partes review of claims 6, 7, 16, 17, 19, and 20 of U. S.
`
`Patent No. 10,804,740 B2 (“the ’740 patent”). Paper 9 (“Dec. to Inst.”).
`
`Patent Owner filed a Patent Owner Response (Paper 17, “PO Resp.”) and a
`
`Motion to Amend (Paper 16). Petitioner filed a Petitioner Reply (Paper 22,
`
`“Reply”) and an Opposition to Patent Owner’s Motion to Amend (Paper 23,
`
`“Opp. to MTA”). On November 23, 2022, we entered Preliminary Guidance
`
`(Paper 26, “Prelim. Guid.”). Patent Owner filed a Sur-reply (Paper 28, “Sur-
`
`reply”) and a Revised Motion to Amend (Paper 28, “Rev’d. MTA”).
`
`Petitioner filed an Opposition to Patent Owner’s Revised Motion to Amend
`
`(Paper 34, “Rev’d. MTA Opp.”) and Patent Owner filed a Reply to
`
`Petitioner’s Opposition (Paper 37, “Reply to Rev’d. MTA Opp.”). A
`
`transcript of an oral hearing held on March 9, 2023 (Paper 43, “Hr’g. Tr.”)
`
`has been entered into the record.
`
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`
`Decision is issued pursuant to 35 U.S.C. §318(a). We base our decision on
`
`the preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`
`Having reviewed the arguments of the parties and the supporting
`
`evidence, we conclude that Petitioner has not demonstrated by a
`
`preponderance of the evidence that the challenged claims are unpatentable.
`
`Having determined that no challenged claims are unpatentable, we dismiss
`
`Patent Owner’s Revised Motion to Amend as moot.
`
`II. THE ’740 PATENT
`
`The ’740 patent concerns a wireless power receiver used for wireless
`
`power transmission, whose thickness is reduced by directly disposing a coil
`
`unit on a top surface of a magnetic substrate or inside the magnetic substrate.
`
`2
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`IPR2022-00118
`Patent 10,804,740 B2
`
`Ex. 1001, 1:21–27, 1:54–56, 1:65–67. Figure 1 of the ’740 patent is
`
`reproduced below.
`
`
`
`
`
`As shown in annotated Figure 1, the wireless power receiver includes
`
`magnetic substrate 100 that concentrates a magnetic field received by
`
`electromagnetic induction or resonance from its transmission side into coil
`
`200, which may adhere to the substrate via an adhesion layer (not shown).
`
`See id. at 4:23–5:37, Figs. 2–3. Connecting unit 300, which may be directly
`
`disposed on coil 200, connects coil 200 via terminals 210, 310 and 220, 320,
`
`to a wireless power receiving circuit that may include a rectifier and a
`
`smoothing circuit to convert AC to DC power to be transferred to a load (not
`
`shown). Id. at 5:19–37, 6:30–39. According to the ’740 patent, “the
`
`thickness of the wireless power receiver can be remarkably reduced by
`
`directly disposing the coil unit on a top surface of the magnetic substrate.”
`
`Id. at 2:29–32.
`
`Figure 11 of the ’740 patent is reproduced below.
`
`3
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`IPR2022-00118
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`
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`Although similar to the embodiment in Figure 1, the Figure 11 embodiment
`
`includes receiving space 130 in magnetic substrate 100. Id. at 2:19–28,
`
`8:30–57, 8:19–57. In the embodiment of Figure 11, connecting unit 300,
`
`which may be of equal or lesser thickness than magnetic substrate 100, may
`
`be disposed in receiving space 130. Id. at 8:44–49. Another difference
`
`between the Figure 1 and Figure 11 embodiments is that in the Figure 11
`
`embodiment, connecting unit 300 may be disposed under coil 200. Id. at
`
`8:32–39.
`
`III. ILLUSTRATIVE CLAIM
`
`Independent claim 6, reproduced below with the paragraph
`
`designations used in the Petition, is illustrative of the subject matter of the
`
`’740 patent.
`
`[6.0] A wireless power receiver, comprising:
`[6.1] an adhesive layer comprising a receiving space;
`[6.2] a coil on the adhesive layer;
`[6.3] a first connection terminal connected to an outer end of
`the coil;
`
`4
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`IPR2022-00118
`Patent 10,804,740 B2
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`[6.4] a second connection terminal connected to an inner end
`of the coil; and
`[6.5] a connecting unit overlapping the receiving space in a
`vertical direction perpendicular to the adhesive layer,
`[6.6] wherein the connecting unit comprises: a third
`connection terminal connected to the first connection
`terminal;
`[6.7] [wherein the connecting unit comprises:] a fourth
`connection terminal connected to the second
`connection terminal; and
`[6.8] [wherein the connecting unit comprises:] a wiring
`layer connected to the third connection terminal.
`
`
`
`IV. GROUNDS OF INSTITUTION
`
`Petitioner asserts that claims 6, 7, 16, 17, 19, 20 would have been
`
`unpatentable on the following grounds:
`
`Claim(s) Challenged
`6, 7, 16, 17, 19, 20
`
`
`35 U.S.C. §
`103
`
`Reference(s)/Basis
`Hasegawa1
`
`V. CONSTRUCTION OF CHALLENGED CLAIMS
`
`A.
`
`Introduction
`
`Prior to Institution, neither party proposed a special definition or
`
`explicit construction of any claim term. PO Resp. 8. In its Patent Owner
`
`Response, Patent Owner identifies a claim construction dispute and proposes
`
`constructions for several terms, as discussed below. Id. at 8–23.
`
`We interpret claim terms using “the same claim construction standard
`
`that would be used to construe the claim in a civil action under 35 U.S.C.
`
`282(b).” 37 C.F.R. § 42.100(b) (2019). In this context, claim terms “are
`
`generally given their ordinary and customary meaning” as understood by a
`
`person of ordinary skill in the art in question at the time of the invention.
`
`
`1 U.S. Patent Application Publication 2009/0021212 (Ex. 1005).
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`5
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`Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (citations
`
`omitted) (en banc). “In determining the meaning of the disputed claim
`
`limitation, we look principally to the intrinsic evidence of record, examining
`
`the claim language itself, the written description, and the prosecution
`
`history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
`
`Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at
`
`1312–17). Extrinsic evidence is “less significant than the intrinsic record in
`
`determining ‘the legally operative meaning of claim language.’” Phillips,
`
`415 F.3d at 1317 (citations omitted). Any special definition for a claim term
`
`must be set forth in the specification with reasonable clarity, deliberateness,
`
`and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`B. Whether the “coil” and “connecting unit” should be construed
`as separate components (claims 6 and 16)
`
`“Patent Owner respectfully requests that the Board construe
`
`independent claims 6 and 16 to require two separate and distinct components
`
`for the ‘coil unit’ and ‘connecting unit.’” PO Resp. 8. According to Patent
`
`Owner, the ’740 patent discloses a “coil unit” consisting of a coil, a first
`
`connection terminal and a second connection terminal, and a separate
`
`connecting unit that constitutes a third connection terminal, a fourth
`
`connection terminal and a wiring layer that connects the third and fourth
`
`connection terminals. Id.
`
`Petitioner argues that the claims do not recite a coil unit, but a coil
`
`connected to first and second connection terminals, indicating that the first
`
`and second connection terminals are not associated with the coil. Reply 2.
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`Petitioner further contends that nothing in the claims precludes the first and
`
`second terminals from being part of the claimed connecting unit. Id.
`
`6
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`Patent 10,804,740 B2
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`1.
`
`Coil v. coil unit
`
`As an initial matter, Petitioner correctly points out that the term “coil
`
`unit” in Patent Owner’s proposed construction is not found in any of the
`
`challenged claims. Reply 2. Notwithstanding Patent Owner’s references to
`
`“coil unit,” we focus on the construction of the term “coil on the adhesive
`
`layer” (i.e., “coil”). The Specification explicitly distinguishes “coil unit
`
`200” that is not recited in the claims from the claimed “coil 230.” See, e.g.,
`
`Ex. 1001, 4:57–5:17. The ’740 patent describes coil unit 200 as including
`
`coil 230, first connection terminal 210, and second connection terminal 220.
`
`See, e.g., Ex. 1001, 4:57–59 (describing Fig. 1), 19:5–8 (describing Fig. 14),
`
`5:34–36 (describing Fig. 26).
`
` The Specification describes coil 230 as a “conductive layer or a
`
`conductive pattern” that “is obtained by winding a conductive line several
`
`times.” Id. at 4:59–60, 4:66–67. The claimed adhesive layer is not shown in
`
`the drawings. Ex. 1001, 5:6–9. The patent confuses matters by its
`
`description stating “coil unit 200 can be directly disposed on the top surface
`
`of magnetic substrate 100” and “an adhesive layer (not shown) may be
`
`disposed between the coil unit 200 and the magnetic substrate 100.” Id. at
`
`5:5–9. Even further confusing the matter is the patent’s description that
`
`“coil unit 200 may include a conductor.” Id. at 5:10. We understand the
`
`’740 patent’s claim language to distinguish the coil from the adhesive layer
`
`and, by its reference to the coil unit as including a conductor, to mean that
`
`the coil unit can also include other components, thereby distinguishing the
`
`coil unit from the coil itself.
`
`In view of the patent’s explicit distinction between coil unit 200 and
`
`coil 230, we do not consider the terms to be interchangeable. The claims
`
`recite specific connection terminals connected to a coil, not to a coil unit.
`
`7
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`IPR2022-00118
`Patent 10,804,740 B2
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`As the term “coil unit” does not appear in the claims, we do not attempt to
`
`construe “coil unit.” We limit our analysis to the coil and the connecting
`
`unit, as claimed.
`
`2.
`
`“Coil” and “connecting unit” as separate components
`
`Patent Owner first argues that, because the challenged claims
`
`separately recite the coil and the connecting unit (e.g., claim limitations 6.2
`
`and 6.3 as designated by Petitioner), under well-settled law, the separately
`
`recited elements are presumed to be distinct components. See PO Resp. 9–
`
`10.
`
`Patent Owner argues that the challenged claims support the
`
`presumption that the coil and the connecting unit are separate and distinct.
`
`Id. at 10–12. Patent Owner emphasizes that the claims recite the coil is
`
`connected through the first and second connection terminals (see claim
`
`limitations 6.3 and 6.4), to the third and fourth connection terminals,
`
`respectively, (see claim limitations 6.6. and 6.7) of the connecting unit (see
`
`claim limitation 6.5). See id. at 10–11. The claim language does not limit
`
`the location of the first and second connection terminals themselves.
`
`Patent Owner argues that, for each embodiment, the Specification
`
`describes the coil (part of the coil unit) and the connecting unit as separate
`
`components. Id. at 12 (citing Ex. 1001, Figs. 1, 11, 14, 26). Patent Owner
`
`notes that the Specification of the ’740 patent describes an embodiment in
`
`which first connection terminal 210 of coil unit 200 is connected to first
`
`connection terminal 310 of connecting unit 300 through a via hole in the first
`
`solder 10 and second connection terminal of coil unit 200 is connected to
`
`second connection terminal 320 of connecting unit 300 through a via hole of
`
`the second solder 20. PO Resp. 12; Ex. 1001, 4:54–60. Patent Owner’s
`
`argument that the Specification supports the presumption that the “coil unit”
`
`8
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`IPR2022-00118
`Patent 10,804,740 B2
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`and the “connecting unit” are separate components fails to consider that
`
`claim language does not recite a “coil unit.” Id. at 12–16. Because the
`
`claims separately recite the connecting unit and the coil and, without further
`
`limitation, that the coil is on the magnetic substrate, we find that the coil and
`
`the connecting unit are separate elements.
`
`Although we find that the coil and the connecting unit are distinct
`
`elements, our inquiry does not end there, as Petitioner contends that the
`
`claims do not require the first and second connection terminals to be part of
`
`the coil and there is nothing that precludes the first and second connection
`
`terminals from being part of the claimed connecting unit. Reply 2.
`
`C. Whether the “first connection terminal” and the “second
`connection terminal” are precluded from being part of the
`“connecting unit”
`
`Patent Owner contends that, as properly construed, the claimed “first
`
`connection terminal” and the claimed “second connection terminal” are not
`
`part of the claimed “connecting unit.” PO Resp. 19–23. Petitioner contends
`
`that the claims do not require the first and second connection terminals be
`
`separate and distinct from the connecting unit, i.e., nothing in the claim
`
`precludes the first and second connection terms from being part of the
`
`connecting unit. Id. at 8–12; see also Reply 4 (citing Regents of Univ. of
`
`Minn. v. AGA Med. Corp., 717 F.3d 929, 935-36 (Fed. Cir. 2013)). In
`
`Regents, the court found that the claims and specification supported a
`
`finding that two occluding disks were structurally separate and dictionary
`
`definitions supported the conclusion that when a physical object is described
`
`as having been affixed, joined, connected, or conjoined to another object, it
`
`means the objects were previously separate. Regents, 717 F.3d at 935–936,
`
`938.
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`9
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`IPR2022-00118
`Patent 10,804,740 B2
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`Petitioner cites the ’740 patent Specification as not referring to the
`
`first and second connection terminals as part of the claimed coil, but only as
`
`part of the non-recited coil unit. Reply 4. Noting that the Specification
`
`describes the first and second connection terminals as located at the ends of
`
`the coil and the claims recite the coil is “connected to” the first and second
`
`terminals, Petitioner argues that the claims are not limited to embodiments in
`
`which the first and second connection terminals are part of the coil.
`
`Petitioner is correct that the claim does not facially exclude the first
`
`and second connection terminals from being located within the connecting
`
`unit, and the Specification is not inconsistent with that scope by not
`
`expressly excluding the first and second connection terminals from within
`
`the connecting unit. However, the U.S. Court of Appeals for the Federal
`
`Circuit held that the correct interpretation of a claim “is not whether the
`
`specification proscribes or precludes some broad interpretation of the
`
`claim,” and “not simply an interpretation that is not inconsistent with the
`
`specification,” but “is an interpretation the corresponds with what and how
`
`the inventor describes his invention in the specification, i.e., an
`
`interpretation that is ‘consistent with the specification.’” In re Smith
`
`International, Inc, 871 F. 3d 1375, 1383 (Fed. Cir. 2017) (citing In re
`
`Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)).
`
`In Smith, where the claim recited a body of a drilling tool, the
`
`Appellant argued that the specification consistently referred to and depicted
`
`the drilling tool as a component distinct from other separately identified
`
`components, such as a mandrel or piston that reside inside the drilling tool,
`
`but not mentioned in the claim. Id. at 1382. The court found that the
`
`Board’s construction of the body to include a mandrel and cam sleeve
`
`10
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`described in the reference was unreasonably broad under general claim
`
`construction principles. Id.
`
`We turn first to the language of the claim. Claim 6 recites a coil, a
`
`first connection terminal connected to an outer end of the coil and a second
`
`connection terminal connected to an inner end of the coil (claim limitations
`
`6.1, 6.2, and 6.3). Claim 6 further recites a connecting unit (claim limitation
`
`6.5) comprising a third connection terminal connected to the first connection
`
`terminal, a fourth connection terminal connected to the first connection
`
`terminal, and a wiring layer connected to the third connection terminal
`
`(claim limitations 6.6, 6.7, and 6.8). Claim 6 does not explicitly recite a
`
`connection between the coil and the connecting unit, except through the first
`
`and second terminals, i.e., the first and second connection terminals are
`
`connected to the outer and inner ends of the coil and the third and fourth
`
`connection terminals of the connecting unit, respectively.
`
`The Specification informs us that “the coil unit 200 (subject matter
`
`not recited in the claim) may include first connection terminal 210, a second
`
`connection terminal 220 and a coil 230” and that “first connection terminal
`
`210 is located at one end of the coil 230 and the second connection terminal
`
`is provided at the other end of the coil 230.” Ex. 1001, 4:57–63. The
`
`Specification further states “[t]he first and second connection terminals 210
`
`and 220 are necessary for connection with the connecting unit 300.” Id. at
`
`4:66–67. The claim recites the first and second connection terminals are
`
`connected to the coil; and the Specification describes the first and second
`
`connection terminals 210, 220 as being part of coil unit 200, a structure
`
`different from coil 230. The Specification does not describe an embodiment
`
`in which the first and second connection terminals are not part of a coil unit
`
`that is separate from the connecting unit. Therefore, we do not read claim 6
`
`11
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`to encompass an embodiment in which the first and second connection
`
`terminals are part of the coil itself or are part of a connecting unit that is
`
`directly connected to the coil without a separate coil unit in between them..
`
`A reading of the claim that is consistent with the claim language and the
`
`Specification also requires we read claim 6 to require that the coil and the
`
`connecting unit are separate.
`
`We are not persuaded that claim 6 encompasses an embodiment that
`
`assigns the first and second connection terminals to the connecting unit,
`
`which already has connection terminals, i.e., the third and fourth connection
`
`terminals. The Specification does not describe a connecting unit including
`
`all four connecting terminals, i.e., that first, second, third, and fourth
`
`connecting terminals. Similarly, claim 1 does not recite that the connecting
`
`unit comprises all four connecting units. Rather, it recites “the connecting
`
`unit . . . comprises[] a third connection terminal . . . [and] a fourth
`
`connection terminal.” Even though claim 1 also recites the “third
`
`connection terminal [is] connected to the first connection terminal” and the
`
`“fourth connection terminal [is] connected to the second connection
`
`terminal,” the connecting unit does not “comprise” the first and connection
`
`terminals. Rather, claim 1 introduces the first and second terminals prior to,
`
`and separate from, the “connecting unit . . . comprises.”
`
`The facts before us are even more compelling than those in Smith
`
`because, unlike in Smith, the connection unit, the coil, and the terminals are
`
`all separately recited in the claim. In addition, we apply the Phillips
`
`standard, whereas Smith was decided under the broadest reasonable
`
`interpretation standard.
`
`Having reviewed the evidence and arguments of record, we construe
`
`the claim to require that the coil and the connecting unit are separate and
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`12
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`distinct components, and that the first and second connecting terminals to be
`
`structurally separate from the connecting unit and the coil. We analyze
`
`Petitioner’s challenge to the patentability of the claims over Hasegawa
`
`accordingly.
`
`VI. ANALYSIS OF CHALLENGED CLAIMS
`
`A.
`
`Introduction
`
`“In an [inter partes review], the petitioner has the burden from the
`
`onset to show with particularity why the patent it challenges is
`
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`
`petitions identify “with particularity . . . the evidence that supports the
`
`grounds for the challenge to each claim”)). This burden of persuasion never
`
`shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
`
`inter partes review).
`
`The question of obviousness is resolved on the basis of underlying
`
`factual determinations including: (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
`
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`
`
`Additionally, the obviousness inquiry typically requires an analysis of
`
`“whether there was an apparent reason to combine the known elements in
`
`the fashion claimed by the patent at issue.” KSR Int’l Co. v. Teleflex Inc.,
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`550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
`
`2006) (requiring “articulated reasoning with some rational underpinning to
`
`support the legal conclusion of obviousness”)); see In re Warsaw
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`Orthopedic, Inc., 832 F.3d 1327, 1333 (Fed. Cir. 2016) (citing DyStar
`
`13
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`Textilfarben GmbH & Co. Deutschland KG v. C. H. Patrick Co., 464 F.3d
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`1356, 1360 (Fed. Cir. 2006)).
`
` An obviousness analysis “need not seek out precise teachings
`
`directed to the specific subject matter of the challenged claim, for a court
`
`can take account of the inferences and creative steps that a person of
`
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; accord In re
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`Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). Petitioner
`
`cannot satisfy its burden of proving obviousness by employing “mere
`
`conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364,
`
`1380 (Fed. Cir. 2016). Instead, Petitioner must articulate a reason why a
`
`person of ordinary skill in the art would have combined the prior art
`
`references. In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016).
`
`A reason to combine or modify the prior art may be found explicitly
`
`or implicitly in market forces; design incentives; the “interrelated teachings
`
`of multiple patents”; “any need or problem known in the field of endeavor at
`
`the time of invention and addressed by the patent”; and the background
`
`knowledge, creativity, and common sense of the person of ordinary skill.
`
`Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328–29 (Fed. Cir.
`
`2009) (quoting KSR, 550 U.S. at 418–21 (2007)).
`
`Before determining whether a claim is obvious in light of the prior art,
`
`we consider any relevant evidence of secondary considerations of non-
`
`obviousness. See Graham, 383 U.S. at 17. Notwithstanding what the
`
`teachings of the prior art would have suggested to one of ordinary skill in the
`
`art at the time of the invention, the totality of the evidence submitted,
`
`including objective evidence of non-obviousness, may lead to a conclusion
`
`that the challenged claims would not have been obvious to one of ordinary
`
`14
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`skill. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). No evidence
`
`of secondary considerations has been presented in this proceeding.
`
`We analyze the asserted grounds of unpatentability in accordance with
`
`these principles to determine whether Petitioner has met its burden to
`
`establish unpatentability by a preponderance of the evidence at trial.
`
`B.
`Claims 6, 7, 16, 17, 19, and 20 as obvious under 35 U.S.C.
`§ 103(a) over Hasegawa
`
`1.
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`Hasegawa – Ex. 1005
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`Hasegawa discloses a coil unit for non-contact power transmission
`
`using the coil. Ex. 1005 ¶ 2. Petitioner’s annotated version of Figure 2 of
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`Hasegawa is reproduced below.
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`
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`Pet. 17. Hasegawa’s coil unit includes planar coil 30 with transmission side
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`31 and non-transmission side 32, magnetic sheet 40 over non-transmission
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`side 32 of the planar coil, and heat sink/magnetic shield plate 50 stacked on
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`the side of the magnetic sheet opposite the side that faces planar coil 30. Ex.
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`1005 ¶¶ 66–67, Figs. 2, 3A, 3B. Planar coil 30, e.g., an air coil formed by a
`
`single core or multi-core coated wire in a plane, has an inner end lead line 34
`
`15
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`
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`IPR2022-00118
`Patent 10,804,740 B2
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`connected to the inner end of the spiral and an outer end lead line 35
`
`connected to the outer end of the spiral. Id. ¶ 68. This arrangement allows
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`transmission side 31 of planar coil 30 to be made flat, so that the primary
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`and secondary coils are adjacent when performing non-contact power
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`transmission. Magnetic sheet 40, made of soft magnetic ferrite material or a
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`soft metal, receives magnetic flux from planar coil 30 to increase the
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`inductance of planar coil 30. Id. ¶ 69. Circular spacer member 60, e.g., a
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`double-sided adhesive sheet with almost the same diameter as that of planar
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`coil 30, placed between planar coil 30 and magnetic sheet 40 is substantially
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`the same thickness as inner end lead line 34. Id. ¶ 72. Spacer 60 also has
`
`slit 62 to avoid at least the inner end lead line 34. Id.
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`Figure 3A of Hasegawa, as annotated by Petitioner, is reproduced
`
`below.
`
`
`
`Pet. 18. Figure 3A shows planar coil 30 adhered to magnetic sheet 40 and
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`heat sink 50 assembled to substrate 100. Ex. 1005 ¶¶ 73–74. Petitioner
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`notes that Figure 3A illustrates lead line 34 disposed in slit 62 of adhesive
`
`layer 60 connected to one of coil connection pads 103 of substrate 100. Pet.
`
`18; Ex. 1005 ¶ 75.
`
`16
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`
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`IPR2022-00118
`Patent 10,804,740 B2
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`2.
`
`Independent Claim 6
`
`a)
`
`Claim limitations 6.0–6.4
`
`Claim limitations 6.0–6.4 recite a structure for a wireless power
`
`receiver (limitation 6.0) in which a coil (limitation 6.2) having a first
`
`connection terminal at its outer end (limitation 6.3) and a second connection
`
`at its inner end (limitation 6.4) is placed on an adhesive layer having a
`
`receiving space (limitation 6.1). See Ex. 1001, 19:61–67. Petitioner cites
`
`Hasegawa as disclosing a wireless power receiver in a portable phone 20 in
`
`which coil unit 22 (the claimed wireless power receiver) receives power
`
`from coil unit 12 within a charger 10. Pet. 20–21. Citing Figure 2 of
`
`Hasegawa, Petitioner notes that coil unit 22 includes double sided adhesive
`
`spacer member 60 (the claimed adhesive layer) with slit 62 (the claimed
`
`receiving space) configured to avoid at least the inner end lead line 34 when
`
`planar coil 30 (the claimed coil) is adhered to magnetic sheet 40. Id. at 21–
`
`22. Petitioner further asserts that Hasegawa’s outer lead line 35 and inner
`
`lead line 34 correspond to the claimed connection terminals because they
`
`connect the outer and inner ends of coil 30 to connection terminals 103 on
`
`substrate 100. Id. at 24–28.
`
`Patent Owner does not explicitly dispute that Hasegawa discloses
`
`claim limitations 6.0–6.4. We find that Petitioner has demonstrated that
`
`Hasegawa discloses claim limitations 6.0–6.4.
`
`b)
`
`Claim limitations 6.5–6.8
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`Claim limitation 6.5 recites “a connecting unit overlapping the
`
`receiving space in a vertical direction perpendicular to the adhesive layer.”
`
`Claim limitations 6.6 and 6.7 recite that the connecting unit comprises third
`
`and fourth terminals connected to the first and second terminals,
`
`respectively; claim limitation 6.8 recites that the connecting unit comprises a
`
`17
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`
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`IPR2022-00118
`Patent 10,804,740 B2
`
`wiring layer connected to the third and fourth terminals. Petitioner cites
`
`Hasegawa as teaching “lead lines 34 and 35 (first and second connection
`
`terminals), coil connection pads 103, and the wiring pattern of substrate 100
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`[of the coil unit] (together the connecting unit).” Pet. 29 (citing Ex. 1005
`
`¶ 62).
`
`Noting that Hasegawa does not use the term “connecting unit,”
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`Petitioner contends that “lead lines 34 and 35, coil connection pads 103 and
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`the wiring pattern on substrate 100 of the coil unit together render obvious
`
`the claimed connecting unit because these components together form an
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`electrical connection between the power-receiving planar coil and the
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`portable telephone.” Pet. 31 (citing Ex.1003, Phinney Decl. ¶ 67).
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`Petitioner identifies one coil connection pad 103 as the third connection
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`terminal and another coil connection pad 103 as the fourth connection
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`terminal. Id. at 33–34. Petitioner further notes that the ’740 patent does not
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`attribute any specific meaning to the claimed “connecting unit” other than
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`the collection of claimed components that transfer power for coil unit 200 to
`
`the load. Id.
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`Patent Owner contends that Hasegawa does not disclose the claimed
`
`first and second connection terminals connected to the coil as separate and
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`distinct from the claimed “connecting unit” that overlaps the receiving
`
`space. PO Resp. 23. According to Patent Owner, Petitioner’s reliance on
`
`Hasegawa fails because Petitioner relies on the same structural elements in
`
`Hasegawa, i.e., lead lines 34 and 35, to show these separate claim
`
`limitations. Id. at 23–24, 30 (“Petitioner and Dr. Phinney identify the same
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`components in Hasegawa, lead lines 34 and 35 to satisfy both the ‘first
`
`connection terminal’/’second connection terminal’ and the ‘connecting unit’
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`limitations in the claims of the ’740 Patent.”).
`
`18
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`
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`IPR2022-00118
`Patent 10,804,740 B2
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`Noting that Petitioner does not combine Hasegawa with any other
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`references or articulate any modifications to Hasegawa, Patent Owner
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`contends that Hasegawa does not teach or disclose first and second
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`connection terminals that are separate from the connection unit. Id. at 24–
`
`25.
`
`The fundamental premise of Petitioner’s argument is inconsistent with
`
`our claim construction. Section V supra. Petitioner acknowledges that in
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`Hasegawa the entire line 34, 35 (not just the ends) is a part of the connecting
`
`unit. Pet. 31; Reply 2; Hr’g. Tr. 10:1–14:15. In Hasegawa, then, all the
`
`connection terminals (the first, second, third and fourth terminals) are on the
`
`connecting unit. Thus, we agree with Patent Owner that Hasegawa does not
`
`disclose the claimed first and second connection terminals connected to the
`
`coil as separate and distinct from the claimed “connecting unit” that overlaps
`
`the receiving space. Petitioner has thus failed to establish by a
`
`preponderance of the evidence that claim 6 is unpatentable.
`
`3.
`
`Independent Claim 16
`
`Independent claim 16 is similar to claim 6, except that instead of
`
`limiting the location of the connecting unit to “overlapping the receiving
`
`space in a vertical direction perpendicular to the adhesive layer,” as recited
`
`in claim 6, claim 16 recites only that the connecting unit is “disposed
`
`corresponding to the receiving space.” The difference between claims 6 and
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`16 does not bear on the parties’ arguments or on the substance of our
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`analysis concerning the disclosures in Hasegawa. See Pet. 38–42.
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`Therefore, we determine that Petitioner has failed to establish by a
`
`preponderance of the evidence that challenged claim 16 is unpatentable over
`
`Hasegawa.
`
`19
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`
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`IPR2022-00118
`Patent 10,804,740 B2
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`4.
`
`Claims 7 and 17
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`Claims 7 and 17 depend from claims 6 and 16, respectively, and recite
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`that “the receiving space extends from inside the coil to outside the coil.”
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`Petitioner cites slit 62 in adhesive member 60 of Hasegawa as disclosing a
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`receiving region that extends from inside to outside of the planar coil. Pet.
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`37–38. Although Patent Owner does not address the additional limitations
`
`recited in claims 7 and 17 explicitly, for the same reasons as those discussed
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`above with respect to independent claims 6 and 16, we find that Petitioner
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`has failed to establish by a preponderance of the evidence that challenged
`
`claims 7 and 17 are unpatentable over Hasegawa.
`
`5.
`
`Claim 19
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`Claim 19 depends from claim 16 and recites that the connecting unit
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`has first and second r
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